Sure, First-to-File is new here, but the rest of the world has been dealing with it forever and the sky has not fallen on technological innovation elsewhere. And it won’t fall on it here either under a First-to-File system.
But consider patent enforcement for a moment if you will. As a patent owner who wants to enforce, you do your diligence, analyze the infringing product, formulate an infringement theory based on a claim construction that supports the infringement while navigating around key prior art. Perhaps you also do some more searching, just to try to avoid being blindsided by a clear anticipatory reference. And having done all that, you know that when you file your complaint, you will be in Federal District Court and your patent will be presumed valid; meaning any attempt to prove your patent should not have been granted in the first place will require evidence of invalidity that rises to a level of clear and convincing, not just simply a preponderance (e.g. not just 51 percent against you). Not only that, but the case will be heard by an Article III judge appointed by the President and vetted by Congress, and that judge will hold a claim construction hearing (Markman hearing) to determine the meaning of the claims based on a long line of well-established, litigation-based claim construction cases. Then, when the judge decides what the claims mean, he or she will charge the jury to determine validity based on that clear and convincing evidence standard; a jury that often is not entirely sure why they are being asked to second guess the USPTO and the Examiner who granted the patent in the first place. And maybe you even selected the court you are going to litigate in because it’s in your home town or has a history of favorable rulings for patent owners.
All in all, if you have confidence in your patent and litigation counsel, and some money to back it up, you have a pretty good reason to be confident that you will get a good result – trial, summary judgment or settlement.
But not so fast – things are not what they once were. Serve that complaint for patent infringement today and sometime in the next twelve months an odd looking, sixty page document, perhaps with a two hundred plus page “expert” declaration attached, shows up at your office. You have been served with a copy of a petition to the USPTO, requesting that it institute a Post-Grant Proceeding against your patent to determine its validity; and what you thought you knew about enforcing your patent just went out the window.
The America Invents Act (“AIA”) brought us three new Post-Grant Proceedings: Post-Grant Review, Inter Partes Review and the transitional program for Covered Business Method Patents Review. In spite of only one actually being called “inter partes,” all are a form of inter partes trial in the USPTO in which the party opposing the patent has a full opportunity to participate and present evidence and witnesses.
So what changes? For starters, assuming your case has not progressed very far, there is a greater possibility it will be stayed. Then, assuming that petition is granted – (out of about 150 petitions for IPR filed since the law went into effect on September 16, 2012, as of March 1, thirteen had been decided with only one denied) – the validity of your patent is no longer going to be determined by a jury who may respect the Patent office, the claim construction is no longer determined by an Article III judge and… your issued patent no longer enjoys a presumption of validity.
In a Post Grant Proceeding, the validity of the claims will be determined by a panel of three Administrative Patent Judges, many of whom were hired by the USPTO in the last eighteen months. That panel will both construe the claims and determine the validity – judge and jury all in one – and instead of a presumption of validity, your claims are now treated just like they were in the original prosecution: Claim terms are given their “broadest reasonable construction” and a mere preponderance of the evidence is enough to invalidate.
Changes don’t stop there – the IPR and PGR proceedings are statutorily required in most cases to be resolved by the USPTO within twelve months of the petition being granted. The Patent Office rules for these proceedings are extraordinarily complex and generally do not allow for extensions other than by agreement with the opposing party and even then, a number of important deadlines cannot be moved. Discovery and depositions are extremely limited. And if past experience with interferences is a guide, sanctions could be freely levied against those who don’t comply.
This can’t be you say! Perhaps your patent was granted 10 years ago. Maybe it has even been enforced before and declared valid by a Federal District Court, or even the Federal Circuit. Sorry – new law, new rules – back to the patent office you go. And by the way, the fact that the prior art relied on by the petitioner now was considered before by the examiner or a court doesn’t matter either if the petitioner is able to present a reasonable likelihood of being able to invalidate at least one claim of the patent (but as mentioned above, so far only 1 of 13 failed to do that).
So what does this all mean. First, patent owners who enforce should not panic, the sky still is not falling. But don’t try to convince yourself that a Post Grant Proceeding can’t happen to you. Learn what they are, how they work and how you can be best prepared to fight one off when it happens. Because if you are a patent owner who actively enforces your patents, it is going to happen to you sooner or later.
In a series of following posts, I will discuss various aspects of how you can prepare before and after the petition is served on you; and things you might consider doing a bit differently during the initial prosecution to strengthen your patents to better defend against a Post Grant Proceeding.